Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Specification
1. The disclosure is objected to because of the following informalities: on page 65, in paragraph [0232] of the deposit information, there is an accession number listed as “________”; additionally, there is no date of the deposit. The issue of a blank instead of an accession number is also found throughout the specification, as illustrated in at least paragraphs [0006], [0007], [0012], [0038], [0041], [0042], [0044], [0047], [0048], [0053], [0058] and [0062]. Appropriate correction of all instances of blanks instead of an accession number is required.
Claim Objections
2. Claims 1, 17 and 19 are objected to because of the following informalities:
In claim 1 "having" should be - - has - - in order for it to be grammatically correct.
Claim 17 recites "crossing the bean plant of claim 2 with itself" in parts (a), (b), and (d); and this is technically incorrect. A plant is either crossed with a different plant or else it is self-pollinated. See, for example, claim 12 which correctly recites "self-pollinating the bean plant of claim 2".
Further, there are two claimed named as claim 19. Renumbering the claims are required. For examination purpose, two claims are temporarily named as claim 19a and claim 19b according the order of precedence, respectively.
Claim 19b is missing a period at the end.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
4. Claims 1-19a, 19b-25 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 2, 4, 5, 14, 16-19a, 19b, 22 and 23 are indefinite in the recitation of “HMC019108”, given that a name does not clearly identify the claimed bean plant variety and seed, and does not set forth the metes and bounds of the claimed invention. Since the name HMC019108 is not known in the art, the use of said name does not carry art recognized limitations as to the specific characteristics or essential characteristics which are associated with that denomination. In addition, the name appears to be arbitrary and the specific characteristics associated therewith could be modified. Amending the independent claims to recite the accession number, or the assurance that the claims will be so amended, would overcome the rejection.
Claims 1, 2, 4, 5, 14, 16-19a, 19b, 22 and 23 are indefinite in the recitation of NCIMB No. ______”, because the accession number is missing. Amending the claims to recite the accession number, or the assurance that the claims will be so amended, would overcome the rejection.
In claim 7, the recitation “the method of claim 7” renders claim indefinite. Instant claim 7 is drawn to a bean pod or seed, not a method. It is unclear what method it refers to. The metes and bounds are not clear.
In claim 11, the recitation “the method of claim 7” renders claim indefinite. Instant claim 7 is drawn to a bean pod or seed, not a method. It is unclear what method it refers to. The metes and bounds are not clear. Further, claim 11 is indefinite in the recitation of "The bean seed" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claims 20 and 22 are indefinite in the recitation of "improved shelf life", "delayed shelf life" and "improved nutritional quality”. It is unclear what is meant by these recitations, because they are not defined in the specification and can have variable meanings. For example, improved nutritional quality could indicate a change in amino acid composition, or a change in fatty acid composition, or a change in carbohydrate composition. Absent an explanation of what constitutes "improved shelf life", "delayed shelf life" and "improved nutritional quality”, claims 20 and 22 are indefinite.
In claims 20 and 21, the recitation “The plant of claim 19” renders claims indefinite. There are two claims numbered as claim 19 and it is unclear which one it refers to. The metes and bounds are not clear.
Claim 23 is indefinite in the recitation of "essentially" all of the physiological and morphological characteristics of bean plant HMC019108”, because it is unclear which of the physiological and morphological characteristics of bean plant HMC019108 are essential and which are not. While the specification at paragraph [0077] indicates that
A plant having essentially all of the physiological and morphological characteristics means a plant having all of the physiological and morphological characteristics of a plant of the present disclosure, except for example, additional traits and/or mutations which do not materially affect the plant of the present disclosure, or, a desired characteristic(s), which can be indirectly obtained from another plant possessing at least one single locus conversion via a conventional breeding program (such as backcross breeding) or directly obtained by introduction of at least one single locus conversion via New Breeding Techniques.
the specification does not here or elsewhere explain which of the physiological and morphological characteristics of bean plant HMC019108 are essential and which are not under these circumstances. Accordingly claim 23 is indefinite.
The claims which are dependent on all instant claims above are also rejected.
Enablement
5. Claims 1-19a and 19b-25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Since seed of the bean plant variety HMC019108 is essential to the claimed invention, it must be obtainable by a repeatable method set forth in the specification or otherwise be readily available to the public. If the seed is not so obtainable or available, the requirements of 35 U.S.C. 112 may be satisfied by a deposit thereof. In the instant case the specification does not disclose a repeatable process to obtain the exact same seed in each occurrence, and it is not apparent if such seed is readily available to the public.
If a deposit is made under the terms of the Budapest Treaty, then a statement, affidavit or declaration by Applicants, or a statement by an attorney of record over his or her signature and registration number, or someone empowered to make such a statement, stating that the deposit has been accepted and that instant invention will be irrevocably and without restriction released to the public upon the issuance of a patent, would satisfy the deposit requirement made herein.
If a deposit has not been made under the Budapest Treaty, then in order to certify that the deposit meets the criteria set forth in 37 CFR 1.801-1.809 and MPEP 2402-2411.05, Applicant may provide assurance of compliance by statement, affidavit or declaration, or by someone empowered to make the same, or by a statement by an attorney of record over his or her signature and registration number showing that:
(a) during the pendency of the application, access to the invention will be afforded to the Commissioner upon request;
(b) all restrictions upon availability to the public will be irrevocably removed upon granting of the patent;
(c) the deposit will be maintained in a public depository for a period of 30 years or 5 years after the last request or for the enforceable life of the patent, whichever is longer;
(d) the viability of the biological material at the time of deposit will be tested (see 37 CFR 1.807); and
(e) the deposit will be replaced if it should ever become inviable.
For each deposit made pursuant to these regulations, the specification shall be amended to contain (see 37 CFR 1.809):
(1) The accession number for the deposit;
(2) The date of the deposit;
(3) A description of the deposited biological material sufficient to specifically identify it and to permit examination; and
(4) The name and address of the depository.
Remarks
Claims 1-19a, 19b-25 are provisionally deemed free of the prior art, given the failure of the prior art to teach or reasonably suggest bean plant with the specific combination of traits exhibited the exemplified bean plant variety HMC019108, or methods of its use. The closest prior art identified is Gehin (U.S. Patent No. 11,503,791, issued Nov. 22, 2022), who teaches a bean plant that differs from the exemplified bean plant variety in at least the following characteristics: distribution of sieve size at optimum maturity (columns 37-39).
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/LI ZHENG/Primary Examiner, Art Unit 1662